In Mülhens GmbH & Co KG v OHIM (T-93/06) unreported, the Court of First Instance (CFI) upheld an opposition to an application to register the word mark MINERAL SPA as a Community trade mark (CTM) for soaps and cosmetics, on the grounds that it would take unfair advantage of the reputation of an earlier Benelux word mark SPA registered for mineral water. The CFI held that the Applicant could not take unfair advantage of the image of the earlier trade mark and the message conveyed by it, in that the goods covered by the mark applied for would be perceived by the relevant public as bringing health, beauty and purity.

BACKGROUND

Mülhens applied to register the word mark MINERAL SPA for “soaps, perfumeries, essential oils, preparations for body and beauty care, preparations for the hair, dentifrices” in Class 3. Spa Monopole filed an opposition under Article 8(5) of the Community Trade Mark Regulation (40/94/EC) on the grounds that the mark would be detrimental to, or take advantage of, the distinctive character or the repute of its earlier Benelux mark SPA registered for mineral water and other beverages in Class 32.

The Opposition Division of the Office for Harmonization in the Internal Market (OHIM) upheld the opposition on the ground that the mark applied for would likely be detrimental to, or take unfair advantage of, the distinctive character or the repute of the earlier trade mark within the meaning of Article 8(5).

OHIM’s Second Board of Appeal upheld that decision. The Board decided that the relevant public was the general public, and that the earlier mark enjoyed a huge reputation in the Benelux for mineral water. It held that the word “mineral” was descriptive of some component of the goods covered by the trade mark application and that the word “spa” could constitute the most distinctive element of the trade mark applied for. This was as a result of the reputation of the earlier trade mark SPA in the Benelux, where that word had acquired a secondary meaning and a strong distinctive character in relation to mineral water. By extension, it had developed a secondary meaning with respect to goods having a certain nexus with mineral water.

According to the OHIM Board of Appeal, since the earlier trade mark was included in the trade mark applied for, the conflicting marks were sufficiently similar visually, aurally and conceptually for the average consumer to establish a link between them without, however, confusing them. On account of that link, the Board considered that it would be quite likely that the Applicant would take unfair advantage of the reputation and the consistent selling power of the earlier trade mark. In the absence of due cause, the Board upheld the opposition. Mülhens applied to the CFI to annul the Board’s decision.

COURT OF FIRST INSTANCE

The CFI dismissed Mülhens’ application. The Court held that, according to Article 8(5), a mark with a reputation is protected with regard to any application for an identical or similar mark that might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered.

The Court held that the Board was correct to find that the relevant public was composed of the general public in the Benelux. This was due to the fact that both the goods covered by the earlier mark and those covered by the mark applied for were everyday consumer items. The marks were also similar at a visual and conceptual level, as the average consumer in the Benelux would probably focus his attention on the second component of the expression “mineral spa” since the word “mineral” described the components of the goods in question on account of the common use of minerals in cosmetics. Moreover, on a conceptual level, the average consumer in the Benelux would probably associate the mineral water marketed under the SPA trade mark with the word SPA contained in the mark applied for. Therefore a link had been established in accordance with Article 8(5).

The CFI also held that, on the facts, the reputation of the earlier trade mark in the Benelux for mineral water was, at the very least, extremely significant. The mark had been used for a number of years; SPA water was available throughout the territory of the Benelux with a strong presence in both mass and small-scale distribution; Spa Monopole was the leader in the market for mineral water with a market share of 23.6 per cent; and the company had made significant advertising investments and sponsored a number of sports events.

The Court was also satisfied that the Board was correct in its assessment that Mülhens was quite likely to take unfair advantage, without due cause for use, of the repute of the earlier trade mark. In order to fall within Article 8(5), it is sufficient that there is a risk that the use without due cause of the mark applied for takes unfair advantage of the repute of the earlier mark. In other words, that the image of the mark with a reputation of the characteristics that it projects are transferred to the goods covered by the mark applied for. The result is that the marketing of those goods is made easier by the association with the earlier mark with a reputation.

In the Court’s view, the risk of such a transfer had been established in this case. First, the relevant public, i.e., the general public in the Benelux, might be the same as that targeted by the earlier mark. Secondly, the goods sold by Mülhens were not dissimilar to the goods sold by Spa Monopole—thermal waters, cosmetic products, soaps and essential oils—and could be used for skin and beauty treatments. In addition, mineral waters and mineral salts could be used in the production of soaps, other cosmetic products and preparations for the hair. Furthermore, mineral water operators sometimes sell cosmetic products comprising mineral water. Finally, the image of the earlier mark and the message that it conveyed related to health, beauty, purity and richness in minerals. That image and that message could apply also to the goods in respect of which registration was sought, since they were used to preserve and improve health or beauty.

Therefore, were this new mark to be granted, Mülhens could take unfair advantage of the image of the earlier mark and the message conveyed by it. Accordingly, the risk of a free-riding transfer of the advertising effort made by the proprietor of the earlier mark to the mark applied for had been established.

COMMENT

Mülhens no doubt feel somewhat aggrieved. MINERAL SPA is strongly evocative of health and vitality, characteristics any manufacturer would like to have associated with its soaps and cosmetics. Unfortunately for Mülhens, the fact that those characteristics are also associated with mineral water meant that there was a risk that the reputation in Spa Monopole’s mark would transfer to Mülhens’ products. Paradoxically, as Mülhens vehemently contended, the word “spa” is arguably descriptive and possibly generic of mineral water and through its connection with health resorts, of health and fitness. That, however, worked against Mülhens as it virtually guaranteed that the relevant public, whilst not actually confused, would perceive a link between the conflicting marks. Not only were the marks therefore conceptually similar, but the concept of health that they shared carried through to goods that were otherwise dissimilar.